Narrow scope of protection for 3D trademarks?

Intellectual Property and Technology Alert

The Finnish Supreme Court’s decision 2017:42 handed down on 13 June 2017 regarding the distinctiveness of 3D trademarks and the likelihood of confusion with the shapes of competing goods, follows the trend we have seen from the Court of Justice of the European Union. This trend, if continued, is unfortunate for IP right holders, and the value of 3D trademarks may need to be re-evaluated. After this ruling, we may also see changes in the registration policies of the Finnish Patent and Registration Office. The Supreme Court´s ruling is a good reminder for organisations to re-evaluate and update their brand protection strategy.

The plaintiff in the case was a Finnish company Abloy Oy, a company well known in the locking technology and solution industry. Abloy´s claim followed the defendant´s release of its EDGE key into the market. The release was made after - and likely because of - the expiry of Abloy´s patent and design protection.

Abloy argued that the defendant´s keys infringe Abloy's trademark, as the defendant´s key heads cause a likelihood of confusion among the public with Abloy´s registered trademark. Abloy continued that the defendant's use of Abloy´s trademark would also take unfair advantage of or be detrimental to the distinctive character or the repute of Abloy's trademark (Section 6.2 of the Finnish Trademarks Act). The Supreme Court did not consider the due to the restrictions given in the leave to appeal to Abloy. Market Court had previously ruled that Abloy had not been able to demonstrate that Abloy´s 3D trademark had reputation within the meaning of Section 6.2 of the Trademarks Act.

The Supreme Court did not find Abloy´s arguments convincing. The Court held that the scope of protection for Abloy´s trademark is narrow, as the key head (the part of the key that you hold onto when opening locks) is mainly functional, rather than imaginary or decorative. The Court also considered that Abloy was not able to establish that its 3D trademark would have gained substantial distinctiveness in the market, which may have had extended the scope of protection, even if not fully meeting the standard of section 6.2 of the Trademarks Act.

The Supreme Court considered that key heads with round corners, holes drilled for attachment and consisting of black plastic are common on the market. The Court went on assessing that the most distinctive part of Abloy´s key head was the diagonally placed oval mounting hole. In the defendant´s key the oval mounting hole was bigger and placed horizontally in the key head, and the key head also contained the defendant's trademark EDGE. The Court found that these differences are sufficient and there is no likelihood of confusion between the defendant´s keys and Abloy´s trademark.

Abloy and its counsel might not be alone in finding the EDGE keys be quite similar to and even infringing Abloy´s registered trademark. However, based on the Supreme Court´s decision the scope of protection of 3D trademarks is narrower than what may have been commonly understood. Hence, companies should review their brand portfolios and brand protection strategies, and make any necessary adjustments.

For relevant case law from the Court of Justice of the European Union, please see for example:

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DLA Piper is a global law firm with lawyers located in more than 40 countries throughout the Americas, Europe, the Middle East, Africa and Asia Pacific, positioning us to help clients with their legal needs around the world.